- Minerva Surgical, Inc. v. Hologic, Inc.All claims unpatentablePTAB · May 8, 2018 · PGR2017-00002 · APJ Meredith C Petravick · PGR · Final written decision
Claims 1–19 are unpatentable under § 112(a) for lack of written description; Petitioner did not prove lack of enablement.
RulingsFinal written decision- BurdenUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot shown unpatentable
“Under 35 U.S.C. § 112(a), enablement is separate and distinct from the written-description requirement. Ariad, 598 F.3d at 1344. “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “[A] patent specification complies with the statute even if a ‘reasonable’ amount of routine experimentation is required in order to practice a claimed invention.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands factors, include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breath of the claims. Wands, 858 F.2d at 737. It is Petitioner’s burden to show by a preponderance of the evidence that the claims of the ’989 patent lack enablement. 35 U.S.C. § 326(e). Petitioner’s evidence and argument does not sufficiently establish that the ’989 patent fails to teach those in the art to make and use the claimed invention without undue experimentation. See PO Resp. 58–66. The Petition does not address the Wands factors sufficiently so as to show that undue experimentation is required to make or use the claimed invention. For example, neither the Petition nor Dr. Pearce sufficiently addresses the state of the prior art or the relative skill of those in the art. See Pet. 64–65; Ex. 1002 ¶¶ 145–152; PO Resp. 62. As Patent Owner argues, this is an “omission[] that [is] particularly fatal” to Petitioner’s enablement argument, because Petitioner argues that mechanical expansion and inflation expansion are incompatible and cannot be combined. PO Resp. 62; see Pet. 30–38, 64. Dr. Grundfest, however, testifies that it was well known to combine mechanical and balloon-based expansion in surgical devices. Ex. 2005 ¶¶ 132–136; PO Resp. 56. During cross-examination, Dr. Pearce testified that he “thought about the state-of-the-art in minimally invasive surgery during the 1990s.” Ex. 2003 18:1–14. Dr. Pearce’s testimony is conclusory and does not sufficiently address whether he considered whether it was well known to combine mechanical expansion and inflation expansion in surgical devices. For another example, relying upon the testimony of Dr. Pearce, the Petition asserts that a redesign of the expansion design disclosed in the ’989 patent “would take a substantial amount of time and cost to achieve.” Pet. 65 (citing Ex. 1002 ¶ 149). Likewise, Dr. Pearce testifies, “[s]uch a redesign would take a substantial amount of time and cost to achieve.” Ex. 1002 ¶ 149. Dr. Pearce, however, does not explain sufficiently why combining mechanical expansion and inflation expansion would require a substantial amount of time and cost. See id. For these reasons, we determine that Petitioner has not met its burden of showing by a preponderance of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for lack of enablement.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). We are not persuaded that Dr. Pearce’s testimony concerning the level of skill in the art is erroneous to the extent it does not explicitly require experience related to devices used for uterine surgical procedures or surgical devices that employ expandable inflation-based and mechanical-based components. Patent Owner’s argument and Dr. Grundfest’s testimony is inconsistent with the ’989 patent, which does not disclose an ablation device or method of using an ablation device that solves problems unique to endometrial ablation or unique to surgical devices that employ expandable inflation-based and mechanical-based components. The ’989 patent does not limit the art to be “the field of minimally invasive surgical and uterine devices” (Ex. 2005 ¶ 60). The ’989 patent states: “The present invention relates generally to the field of apparatuses and methods for ablating or coagulating the interior surfaces of body organs. Specifically, it relates to an apparatus and method for ablating the interior linings of body organs such as the uterus and gallbladder.” Ex. 1001, 1:20–24; see also id. at 2:36–38 (“The present invention is an apparatus and method of ablation and/or coagulating tissue, such as that of the uterus or other organ”).” slip op. at 16
Patent outcomesUS 9,247,989 unpatentable§ 112 disclosurePatents in suitUS 9,247,989 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00309 · APJ Justin Busch · IPR · Final written decision
Claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable; claims 3–5 are not shown unpatentable, and challenges to claims 18–20 are dismissed.
RulingsFinal written decision- BurdenMixed
“Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable, but has failed to do so for claims 3–5 and 12–15. We dismiss the Petition with respect to the challenges asserted against claims 18–20.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Although a prior art reference may anticipate when the claim limitations not expressly found in that reference are inherent in it, inherency requires that “the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Here, Petitioner’s arguments and evidence fail to persuade us that de Kok disclosure of suppressing random noise inherently includes determining trace to trace coherence. Merely demonstrating a step may be done is not sufficient to show that step is inherently anticipated. Accordingly, based on the arguments and evidence submitted, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 12 and 17. Similarly, because claims 13–15 ultimately depend from claim 12, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 13–15.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 15 (citing Ex. 1004, 8:46–47); Pet. 47 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments.” slip op. at 27
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,906,981 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01450 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 46–48 (citing Ex. 1113 ¶¶ 56, 59). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 47–48 (citing Ex. 1113 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 48 (citing Ex. 1113 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 45–48. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, and Klappenbach in the manner proposed by Petitioner.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01436 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 78–80 and 83–89 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 78–80 and 83–89 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 78–80 and 83–89 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 10–13 (citing Ex. 1913 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“camera.” Ex. 1002, col. 53, l. 63–col. 54, l. 2. Petitioner argues that the housing in Klappenbach corresponds to the claimed structure configured to accommodate a forward facing camera, and that the vehicle headlight dimming control in Schofield includes the claimed forward facing camera. Pet. 39–42. The housing in Klappenbach is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. Pet. 39–42. Therefore, on this record, Petitioner has not shown sufficiently that the combined teachings of Blank, Schofield, Klappenbach, and Carter would have taught or suggested the limitation “said structure is configured to accommodate a forward facing camera” to one of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01431 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 62–66 and 69 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 62–66 and 69 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“§ 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). Petitioner contends that pursuant to the holding in Lockwood, the specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–17 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“We have reviewed the parties’ assertions and supporting evidence, and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera, rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–44 (citing Ex. 1713 ¶ 59). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is a manufacturing advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1713 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1713 ¶ 59. 5. Conclusion For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 62, 63, 65, 66, and 69 would have been obvious over Blank, Schofield, Klappenbach, and Batavia. C. OBVIOUSNESS OVER BLANK, SCHOFIELD, KLAPPENBACH, BATAVIA, CARTER, AND ADMITTED PRIOR ART” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01430 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 14–21 and 24 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 14–21 and 24 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–16 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree.. Lockwood contains no such explicit holding. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“a) Structure Configured to Accommodate a Camera Independent claim 1 requires a structure configured to accommodate a forward facing camera. Petitioner relies on Klappenbach’s housing 2 as the claimed structure to accommodate Schofield’s forward facing camera (dimming control 12 having image sensor module 14 that may be a video camera). Pet. 40–44. As Petitioner acknowledges, Klappenbach’s rain sensor does not include a camera; rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11. See id. at 43; Ex. 1010, 3:46–67, Figs. 1, 2. Rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, 3:46–67, Fig. 1. Klappenbach’s sensor is pressed against, and at the angle of the windshield. Id. at 1:45–59; Figs. 1, 2. In contrast, Schofield’s camera is spaced from the windshield, and oriented horizontally. See Ex. 1007, Fig. 1; Prelim. Resp. 27–28. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. See Pet. 36–38, 41– 44. Consequently, Petitioner has not addressed persuasively this difference between the prior art and the claimed subject matter, nor explained sufficiently how claim 56 is unpatentable. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (factor 2); 37 C.F.R. § 42.104(b)(4).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–43 (citing Ex. 1613 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 38 (citing Ex. 1010, 2:11–16; Ex. 1613 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1613 ¶ 59.” slip op. at 14
§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01451 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 90–97 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 90–97 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 90–97 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written description of the attachment members attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 11–13 (citing Ex. 2013 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Petitioner argues that the ’287 patent does not contain sufficient written description of “how the ‘rails, channels or the like’ would adhere to the windshield to permit co-engagement as the inverted U or V-shaped portion 8513a engages the mirror mounting button 8536.” Pet. 13 (citing Ex. 2013 ¶¶ 33, 40). Petitioner’s argument is not persuasive because the challenged claims of the ’659 patent do not recite that the attachment members or structure supported by the attachment members engage the mirror mounting button. See Ariad, 598 F.3d at 1351 (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.”) (emphasis added). Further, as discussed above, the ’287 patent explains that the console supported by the attachment members straddles the mirror mounting button. Ex. 1012, col. 28, ll. 15–28.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“We also are not persuaded, on this record, that it would have been obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 42–44 (citing Ex. 2013 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 43–44 (citing Ex. 2013 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 44 (citing Ex. 2013 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 41–44. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, Klappenbach, and Carter in the manner proposed by Petitioner.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01429 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 56–61 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 56–61 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“1002, 1:7–23. For a claim to gain the benefit of the filing date of an earlier filed application under 35 U.S.C. § 120, each application in the chain leading back to that earlier application must comply with the written description requirement of 35 U.S.C. § 112, first paragraph. See, e.g., Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007). Satisfaction of the written description requirement under 35 U.S.C. § 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 44–45 (citing Ex. 1513 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1513 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1513 ¶ 59.” slip op. at 14
§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 8,692,659 - Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentablePTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision
Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31
Patent outcomesUS 6,857,022 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 6,857,022
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.